Rembrandt should have been granted new trial of claims against Johnson & Johnson

Rembrandt should have been granted new trial of claims against Johnson & Johnson

By Peter Reap, J.D., LL.M.

The federal district court in Jacksonville, Florida, abused its discretion in denying Rembrandt Vision Technologies’ (“Rembrandt’s”) motion for a new trial under Rule 60(b)(3), in a case in which Johnson & Johnson Vision Care, Inc. (“JJVC”) was granted judgment as a matter of law on claims that it infringed a patent on soft gas permeable contact lenses held by Rembrandt, the U.S Court of Appeals for the Federal Circuit has decided (Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., April 7, 2016, Stoll, K.). The case was reversed and remanded for a new trial.

Rembrandt sued Johnson & Johnson Vision Care, Inc. (“JJVC”), alleging that its Acuvue Advance and Oasys contact lenses infringed the asserted claim of U.S. Patent No. 5,712,327. At trial, the parties disputed whether JJVC’s accused lenses met the “surface layer” and “soft” limitations of the asserted claim. Following trial, the jury returned a verdict of noninfringement. The district court, in the alternative, granted judgment as a matter of law that Rembrandt failed to prove that the accused lenses were “soft.”

At trial, Rembrandt relied on expert testimony from Dr. Thomas Beebe to prove that the accused lenses met both the “surface layer” and “soft” claim limitations. Because his testimony on cross-examination significantly conflicted with both his testimony during his direct examination and the testing methodology disclosed in his expert report, the district court ultimately struck Dr. Beebe’s trial testimony regarding this testing. After noting that Dr. Beebe’s stricken testimony was the only evidence that Rembrandt advanced to prove the accused lenses were “soft” in opposing JJVC’s motion, the district court granted JMOL that JJVC did not infringe.

In turn, JJVC relied on expert testimony from Dr. Christopher Bielawski to support its position that its accused lenses did not meet the “surface layer” limitation, but did not present expert testimony with respect to the “soft” limitation.

After trial, Rembrandt received information suggesting that Dr. Bielawski testified falsely at trial. Now, the parties did not dispute that Dr. Bielawski testified falsely during trial. Specifically, Dr. Bielawski repeatedly testified that he personally conducted X-ray photoelectron spectroscopy and time-of-flight secondary ion mass spectrometry (“TOF-SIMS”) laboratory testing on JJVC’s accused lenses when, in fact, the testing was conducted by Dr. Bielawski’s graduate students and various lab supervisors. Moreover, the post-trial discovery suggested that Dr. Bielawski overstated his qualifications and experience with these testing methodologies. Whereas Dr. Bielawski was presented to the jury as an expert in TOF-SIMS testing, he actually “had no TOF-SIMS experience whatsoever.”

In addition to showing Dr. Bielawski’s false testimony, the post-trial discovery revealed that Dr. Bielawski withheld test results and data analysis that would have undermined his opinions and trial testimony. In particular, Dr. Bielawski withheld data from tests conducted on third-party contact lenses previously found to infringe the asserted claim. In light of this post-trial discovery, Rembrandt moved for a new trial under Rules 60(b)(2) and (3).

With little discussion, the district court dismissed Rembrandt’s argument that the withheld documents prevented it from fully and fairly presenting its case. The district court thus limited its analysis to Dr. Bielawski’s false testimony. The district court concluded that Rembrandt was not entitled to a new trial under Rule 60(b)(2) because Rembrandt had not satisfied the requirement in the Eleventh Circuit that a new trial would probably produce a new result. And it concluded that Rembrandt was not entitled to a new trial under Rule 60(b)(3) because JJVC’s counsel was not complicit in the false testimony and because Rembrandt was not prevented from fully and fairly presenting its case. Rembrandt appealed.

The Federal Circuit first considered Rembrandt’s motion for a new trial under Rule 60(b)(3), which permits a district court to grant a new trial in cases involving “fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party.” Fed. R. Civ. P. 60(b)(3). To prevail on a motion under Rule 60(b)(3) in the Eleventh Circuit, the movant must establish that: (1) the adverse party engaged in fraud or other misconduct; and (2) this conduct prevented the moving party from fully and fairly presenting its case.

In denying Rembrandt’s motion under Rule 60(b)(3), the district court concluded that “even accounting for Dr. Bielawski’s misconduct, Rembrandt was not prevented from making its case.” The district court clearly erred in finding that Rembrandt had a full and fair opportunity to present its infringement case, the appellate court determined.

Dr. Bielawski testified on a central infringement issue at trial—whether JJVC’s accused lenses met the “surface layer” claim limitation. In doing so, he testified falsely about his personal involvement in the testing, as well as his experience with the relevant testing methodologies. He also withheld contradictory test results on third-party lenses known to infringe and generated at the request of JJVC’s counsel. Because these test results were not produced, Dr. Bielawski testified without contradiction about alleged differences between the accused lenses and the third-party lenses to show that the accused lenses did not have the claimed surface layer. The verdict was irretrievably tainted by Dr. Bielawski’s false testimony and Dr. Bielawski’s and JJVC’s withholding of relevant documents, in the appellate court’s view.

JJVC argued that Rembrandt had a full and fair trial because Dr. Bielawski did not testify regarding the “soft” limitation and Rembrandt could not show that the false testimony and improperly withheld documents resulted in substantial impairment of its ability to present its case on the “soft” limitation. The appellate court was not persuaded.

The Federal Circuit refused to speculate as to what impact the fraud and misconduct had on the ultimate judgment of noninfringement where the false testimony and withheld documents were material to the issue of patent infringement and could well have impacted the jury’s verdict, as well as the district court’s decision to exclude Dr. Beebe’s testimony and consequently grant JMOL on the “soft” limitation. Rembrandt was prejudiced by the withholding of third-party test results and by the false testimony, the appellate court found. Rembrandt was not required to prove that the withheld documents were of such nature as to alter the result in the case. Instead, Rembrandt needed only show that timely production of the documents would have made a difference in the way Rembrandt’s counsel approached the case or prepared for trial. Knowing the weaknesses in JJVC’s evidence regarding the surface layer limitation could well have changed the nature of the entire proceedings, the court observed. It could not be concluded that Rembrandt had a full and fair trial on infringement.

The court next looked to whether Rembrandt established that the adverse party engaged in fraud or other misconduct. Here, the district court abused its discretion in concluding otherwise. Specifically, the district court erred by summarily dismissing Rembrandt’s allegations of misconduct and by requiring proof that JJVC or its counsel was complicit in Dr. Bielawski’s false testimony, the Federal Circuit held.

The district court erred by failing to fully address Rembrandt’s allegations of misconduct and requiring proof of complicity. As used in Rule 60(b)(3), “‘[m]isconduct’ does not demand proof of nefarious intent or purpose as a prerequisite to redress. . . . The term can cover even accidental omissions—elsewise it would be pleonastic, because ‘fraud’ and ‘misrepresentation’ would likely subsume it.” Anderson v. Cryovac, Inc., 862 F.2d 910, 923 (1st Cir. 1988). The district court misinterpreted Eleventh Circuit precedent by requiring proof of complicity to satisfy Rule 60(b)(3). Although evidence of complicity has been considered by the Eleventh Circuit in Harre v. A.H. Robins Co., 750 F.2d 1501, 1503 (11th Cir. 1985), the court did not announce a rule requiring such evidence to prevail on a Rule 60(b)(3) motion, the court explained.

While the district court gave thoughtful consideration to Rembrandt’s Rule 60(b)(3) motion and to the integrity of the judicial process, it erred in requiring complicity and summarily dismissing Rembrandt’s separate allegation of misconduct. Thus, the district court abused its discretion in denying Rembrandt’s motion for a new trial under Rule 60(b)(3). Because the district court’s denial of Rembrandt’s motion for a new trial under Rule 60(b)(3) was reversed, the court did not consider Rembrandt’s Rule 60(b)(2) argument and discovery motions.

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